OATH INC.

Patent Trials and Appeals Board

Mar 1, 2021

2021002142 (P.T.A.B. Mar. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/007,401 01/27/2016 Utkarsh Shrivastava 085804.120200 1011
76058 7590 03/01/2021
VERIZON MEDIA INC.
C/O GREENBERG TRAURIG, LLP
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166
EXAMINER
POSIGIAN, DAVID S.
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
03/01/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cordesp@gtlaw.com
mendozae@gtlaw.com
njdocket@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UTKARSH SHRIVASTAVA, SUHAS SADANANDAN,
KANIKA SHAH, KEVIN DAY, and YAQI HU
Appeal 2021-002142
Application 15/007,401
Technology Center 2100
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed January 27, 2016 (“Spec.”); Final
Office Action, mailed May 4, 2020 (“Final Act.”); Advisory Action, mailed
July 28, 2020 (“Advisory Act.”); Appeal Brief, filed September 21, 2020
(“Appeal Br.”); Examiner’s Answer, mailed December 7, 2020 (“Ans.”);
and Reply Brief, filed February 8, 2021 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Oath, Inc. Appeal
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Application 15/007,401
2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims relate to determining and displaying message content in a
user’s inbox. Spec., Title. Claim 1, reproduced below with labels added, is
illustrative of the claimed subject matter:
1. A method comprising:
[(i)] receiving, at a computing device, a message addressed to
a first user comprising message content included in a body of the
message provided by a second user;
[(ii)] displaying, via the computing device, said message in an
inbox associated with the first user, said inbox comprising an
inbox user interface (UI) that comprises a main inbox window
view for displaying received messages;
[(iii)] receiving, at the computing device, input directed to the
message, said input comprising an instruction for opening said
message within said inbox UI;
[(iv)] extracting, via the computing device, the body of the
message;
[(v)] automatically generating, via the computing device, a
message tab associated with the message in response to receiving
said input, said message tab being an interactive interface
element displayable in said inbox UI, said interface element
comprising functionality for switching from the main inbox
window view to a tabbed window view when selected, said
tabbed window view being an embedded sub-window of the
inbox UI that displays the extracted body of the message;
[(vi)] modifying, via the computing device, said inbox UI by
embedding said interface element within the main inbox window

Br. 2. However, it appears from assignment documents recorded with the
USPTO on October 25, 2020 at reel 254258, frame 0635, that Oath Inc.
assigned its interest to Verizon Media Inc. Appellant should take care to
correctly identify the real party of interest in future appeal briefs. 37 C.F.R.
§ 41.37(c)(i).
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Application 15/007,401
3
view of said inbox UI, said modification causing said message
tab to be displayed within said main inbox window view;
[(vii)] receiving, at the computing device, user input to view
said tabbed window view, said user input being entered
respective to the displayed message tab within said modified
inbox UI; and
[(viii)] automatically switching, via the computing device, a
view of the modified inbox UI from the main inbox window view
to the tabbed window view in response to said user input, said
switching comprising displaying the extracted body of the
message in the tabbed window view.
REFERENCES
The prior art relied upon by the Examiner is:3
Name Reference Date
Domenico US 2003/0107593 Al June 12, 2003
O’Neil et al. US 2004/0224662 Al Nov. 11, 2004
Hardy et al. US 2009/0144655 Al June 4, 2009
Kunz et al. US 2010/0274628 Al Oct. 28, 2010
View and Organize Your Mail FLOSS Manuals, http://write.
flossmanuals.net/thunderbird/reading-and-organizing-mail/ (last visited
Apr. 28, 2020) (hereinafter “Floss”)

REJECTIONS4
Claims 1–9 and 13–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hardy, Floss, and Domenico. Final Act. 5–20.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hardy, Floss and Domenico and, O’Neil. Final Act. 20–21.

3 All reference citations are to the first named inventor only.
4 A rejection of claims 13–20 under 35 U.S.C. § 112(b) (Final Act. 3–4) is
withdrawn. Ans. 3.
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Application 15/007,401
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Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hardy, Floss, Domenico and, Kunz. Final Act. 21–24.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2018).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
Appellant’s Appeal Brief, and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds Hardy’s inbox window, which includes a main
view displaying received messages and tabbed sub-windows displaying
messages satisfying designated criteria, teaches or suggests all limitations of
claim 1 except that it does not explicitly disclose claim element (iv) reciting
a step of “extracting, via the computing device, the body of the message.”
Final Act. 5–8 (citing Hardy Figs. 1, 5, 9, 11; ¶¶ 69, 73, 77, 79, 80, 83, 88).
The Examiner cites to Floss’s description of the Thunderbird email client
application that displays an email in a new tab for teaching extracting the
body of a message as recited by claim element (iv) in addition to teaching
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claim elements (iii) and (v) through (viii). Id. at 9–10 (citing Floss pp. 2–4).
The Examiner reasons the motivation for modifying Hardy to incorporate
Floss’s tabs is to enable opening multiple emails. Id. at 11 (citing Floss p.
3). To the extent Floss does not specifically describe the step of extracting
the body of a message as including content detection, determination,
identification or extraction, the Examiner finds Domenico’s mail client that
displays multiple messages contained in an email (e.g., a string of messages
comprising a thread) using separate tabs further teaches the extracting step
of claim element (iv) together with claims elements (i) – (iii), (iv), (vii) and
(viii). Id. at 12–14. The Examiner states the reason for extracting the body
of a message into a tabbed view embedded sub-window of the inbox user
interface as taught by Domenico into the display of Hardy is “so that user
may easily select and read any desired basic note (Domenico [0039]) with a
graphic object that is particularly effective, simple, and user-friendly.
(Domenico [0049]).” Id. at 15.
Appellant contends the rejection is improper, arguing Hardy’s tabs
display separate message listings of entire messages, not extracted portions
of selected messages as required by claim 1. Appeal Br. 7–11. We address
each of Appellant’s contentions of error as follows.

(a) Hardy’s use of predetermined criteria to filter message to separate
tabs fails to teach opening a specific message as claimed. Appeal
Br. 10.
Appellant argues Hardy automatically separates all received messages
into tabbed displays, not selecting a specific message to be opened. Id. 7–8.
The Examiner responds, noting that the claim does not specify “what or who
performs the ‘input directed to the message’. The claim merely specifies
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that the input directed to the message is received at the computing device
and that the input comprises an instruction for opening said message within
said inbox UI.” Ans. 4–5. According to the Examiner, Appellant’s
Specification does not provide any basis to limit the recited instruction to a
manual user input but can be automatically generated as described by Hardy
in response to a determination that an email satisfies some criteria (e.g.,
determined to satisfy an importance threshold) thereby causing the message
to be automatically opened. See Id. at 5 (“as stated in the instant
specification, input directed to the message comprising an instruction for
opening said message within said inbox UI may be user-generated or
automatic, and the claim does not make any distinction between either
options.”).
Appellant’s argument is unpersuasive of reversible Examiner error.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the
broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). During patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Construing claims broadly during
prosecution is not unfair to the applicant because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage. Am.
Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
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Appellant directs attention to paragraph 91 of the Specification in
support of the argued step of receiving an instruction for opening a message
according to claim element (iii). Appeal Br. 3 (Summary of Claimed
Subject Matter). The referenced portion of the Specification describes the
input can be user-generated or automatically generated, as follows:
For example, upon receiving the message, the message can be
analyzed to determine whether a certain type or category of
content is present within the message. In some embodiments,
such analysis comprises parsing the message and the message
content and comparing the parsed information to particular
criteria. Upon a determination that the type or category of content
satisfies the criteria, the input can be automatically triggered to
open the message. The criteria can be, but is not limited to, a
message’s and/or content’s type, category, timing, date, sender's
identity, recipient’s identity, geo-spatial data, social data, logical
data, format and the like, or some combination thereof.
Spec. ¶ 91. Thus, automatic opening of messages is not only consistent with
but is specifically contemplated by Appellant’s Specification. Cf. Ans. 12.
Furthermore, to the extent that Appellant argues Hardy’s disclosure of
opening all messages fails to teach an instruction for opening a single
message, such argument is not commensurate in scope with the claim. That
is, claim 1 does not preclude opening more than one message. Furthermore,
in the predictable event that a single message satisfying Hardy’s criteria is
received, only that one message would be opened for viewing. Therefore,
we agree with the Examiner in finding that, under a broad but reasonable
interpretation, Hardy’s display of messages satisfying criteria indicating a
particular importance teaches or suggests the argued limitation of claim
element (iii).
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(b) Hardy’s automatic opening of tabs fails to teach generating a
message tab in response to receiving an input directed to the
message including an instruction for opening the message within
an inbox user interface. Appeal Br. 10.
Appellant argues “[t]he present claims do not automatically open
tabs.” However, as explained above, neither do the claims preclude
automatically opening tabs. To the contrary, the Specification describes just
such an embodiment. Spec. ¶ 91. Accordingly, Appellant’s argument is not
persuasive because, inter alia, it is not commensurate in scope with claim 1.
(c) Hardy teaches displaying a listing of messages not extracting
message body content as claimed. Appeal Br. 10.
Appellant argues Hardy discloses a listing of messages using tabs but
does not display extracted message body content in a generated tab window.
Id. According to Appellant:
Hardy’s tab 504 . . . shows that a tab can display a listing of a
plurality of messages. The fact that more than one message can
be displayed within a tab shows that it is for a listing, and not for
extracted message body content as claimed. There is simply no
teaching or suggestion in Hardy to display extracted content in
one of Hardy’s tab.
Id.
The Examiner responds, as follows:
[W]hile Hardy may not explicitly disclose that the extracted body
of the message is displayed in the generated tab, Hardy does
teach that the user can use the menu option screen (not shown)
to control how messages are displayed in each of the message
display regions and optionally which fields are shown (Hardy
[0069]) and the user can use a menu option (not shown) to
specify rules for the fashion in which the important messages are
listed in the message display region (Hardy [0072]).
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Ans. 8, 12–13. The Examiner further explains Appellant’s argument fails to
address the additional teachings of Domenico, finding as follows:
Domenico teaches that when an input is received to open a
received multiple note message, the individual basic note
messages that comprise the body of the multiple note message
are extracted, and a tab is generated for the basic note message
which displays the extracted body of the message for the selected
basic note when the corresponding tab is selected.
Id. The Examiner further explains the rejection is based on the combination
of teachings of the references and that “[o]ne cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references.” Id. at 9 (citing In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)).
Addressing Appellant’s argument that Hardy displays the whole
message, not an extracted portion (Appeal Br. 11), the Examiner responds,
reiterating that Hardy discloses displaying selected portions of messages by
providing user control of how and what portions of messages are to be
displayed. Ans. 14. The Examiner further disagrees with Appellant’s
argument that extracting and displaying the body of the message as recited
by claim 1 should be interpreted as excluding the extraction and display of
other content (see Appeal Br. 11–12), finding Appellant’s disclosure
likewise includes the extraction and display of information related to a
selected message. Ans. 19. Thus, according to the Examiner, consistent
with the Specification, “the claims are not limited to displaying only the
extracted portion in the tabbed window view and do not exclude other
content from being displayed in the tabbed window view.” Id.
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Appellant’s contentions are unpersuasive of reversible Examiner
error. We agree with the Examiner that a broad but reasonable interpretation
of the argued claim language does not require extraction and display of only
the body of the message to the exclusion of other portions. Furthermore,
even if the claims were unduly narrowly construed as argued by Appellant,
Hardy’s display options suggest limiting the information displayed to
extracted message body portions and Domenico’s partitioning of a string of
messages into separate display tabs further teaches the argued extraction
such that the combination of the teachings of Hardy, Floss, and Domenico
teaches or suggests the argued limitation.
(d) “Floss teaches opening entire emails, including the header and
body information in new tabs” thereby teaching away from
extracting message body content as required by claim 1. Appeal
Br. 12–14.
Appellant argues as follows:
Floss displays an entire message in a tab. There is no extraction
of body content for separate display as claimed. Rather Floss
teaches away from what is claimed, namely extracting message
body content from a message and then displaying that extracted
message body content in a tab window.
Appeal Br. 13. The Examiner responds, as follows:
The claims do not recite that only the extracted body of the
message is displayed in the tab, and do not preclude other
content, images, text, information, etc. from being displayed in
the tab, nor do the claims preclude displaying the entire email in
the generated tab. Although the claims are interpreted in light of
the specification, limitations from the specification are not read
into the claims.
Ans. 22 (citing In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993)). The
Examiner further finds “[Floss] does not constitute a teaching away because
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such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed.” Id.at 24 (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004)).
Appellant’s arguments are unpersuasive of reversible error. As
explained above, a broad but reasonable interpretation of the claims does not
preclude the display of other content in addition to the body of the message.
We further agree with the Examiner that the record before us fails to
demonstrate that Floss teaches away from extracting message body content
from a message. To teach away, the prior art must “criticize, discredit, or
otherwise discourage the solution claimed.” In re Fulton, 391 F.3d at 1201.
Teaching an alternative method does not teach away from the use of a
claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also
Ex parte Shuping, No. 2008-0394, 2008 WL 336222, at *2 (BPAI 2008)
(unpublished) (“[T]eaching a way is not teaching away.”) (citation omitted).
Appellant demonstrates no such criticism, discrediting, or discouragement
here.
(e) Domenico’s display of each piece of a thread as a note fails to
teach display of an extracted portion of the message in a separate
tab after receiving an indication to open that particular message.
Appellant argues Domenico displays the entire note including title and
body and, accordingly, fails to teach extracting a body portion of a message
after receiving an indication to open that message. Appeal Br. 15. The
Examiner responds, explaining a selected note tab is selected to put in the
front line as a default, thereby teaching the disputed limitation. Ans. 25.
Appellant’s contention is unpersuasive for the reasons discussed
above, including that it is not commensurate in scope with the claims, which
do not specify how much of the message body need be extracted, nor does it
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preclude extraction and display of other message portions in addition to the
message body. Furthermore, each of Domenico’s notes is extracted from a
portion of a message body, i.e., each note corresponds to a prior message of
a string of messages contained in the body of a subsequent message (e.g.,
reply or forwarding email). See, e.g., Domenico ¶ 20 (“A multiple note
embeds a copy of a series of (basic) notes, for example received by the user
of the computer from other users. In this way, the basic notes may be
simultaneously forwarded to one or more desired users.”) Each note is then
displayed with a corresponding tab. Domenico ¶ 27. Thus, Domenico
teaches or suggests display of an extracted portion of the message in a
separate tab after receiving an indication to open that particular message.
(f) “Domenico teaches displaying the entire note [which] teaches
away from extracting the body portion from a message and then
displaying that extracted message body portion in a separate tab, as
is claimed.” Appeal Br. 15.
Appellant’s argument is unpersuasive for the reasons explained by the
Examiner at pages 26 and 27 of the Answer. In particular, in the absence of
a showing the reference criticizes, discredits, or otherwise discourage the
solution claimed, it does not teach away from making the combination. In re
Fulton, 391 F.3d at 1201.
(g) “[T]here is no motivation in any of the references to modify them
to change the functionality of what is taught by the references into
what is taught and claimed in the instant application.” Id. at 16.
Appellant’s contention merely alleges the Examiner provides
insufficient evidence in support of combining the teachings of Hardy, Floss,
and Domenico, without addressing the Examiner’s specific findings. As
explained above, the Examiner reasons that modifying Hardy to incorporate
Floss’s tabs advantageously enables opening multiple emails. Final Act. 11
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(citing Floss p. 3). The Examiner further explains the reason for extracting
the body of a message into a tabbed view embedded sub-window of the
inbox user interface as taught by Domenico into the display of Hardy is “so
that user may easily select and read any desired basic note (Domenico
[0039]) with a graphic object that is particularly effective, simple, and user-
friendly. (Domenico [0049]).” Id. at 15. Appellant fails to address these
reasons or explain why they are erroneous or insufficient. Accordingly,
Appellant’s argument is unpersuasive of Examiner error.
For the reasons discussed above, Appellant’s contentions of error in
the rejection of claim 1 are unpersuasive. Accordingly, we sustain the
rejection of independent claim 1 together with the rejection of independent
claims 13 and 20, which are argued on the basis of claim 1 (Appeal Br. 16),
and the rejection of dependent claims 2–9 and 14–19, which are not argued
separately with particularity.
Appellant’s contention of error in connection with the rejection of
claim 10 is limited to alleging that O’Neil fails to cure the deficiencies
argued in connection with claim 1 from which it depends. Because, for the
reasons discussed above, we disagree the rejection of claim 1 is deficient or
otherwise erroneous, we similarly disagree the rejection of claim 10 is
improper and we sustain the rejection of claim 10.
In connection with claims 11 and 12, in addition to reasserting
arguments presented in connection with claim 1, Appellant further argues as
follows:
Kunz does not determine a context of the message content for
selection of an advertisement. Kunz determines a domain from
the extracted sender information in a header, or a “campaign ID”
from another extracted header field “that corresponds to a single
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ad stored in the database.” See paragraphs 0039 and 0050 of
Kunz. A person of skill in the art would readily recognize that
using specific data from a message’s header, as in Kunz, is not
the same as determining a context from a message’s content.
Appeal Br. 18. The Examiner responds, as follows:
Kunz’s teachings [that] email server 10 scans the data contained
in the fields of the email header . . . the email server 10 extracts
data contained in one or more header fields and delivers the data
to the ad server 40 (Kunz [0038] and [0039]), and [that] ad server
40 selects an advertisement relevant to the sender domain and
delivers the relevant advertisement to the email server 10 (Kunz
[0040]) sufficiently teaches the claim limitations under the
broadest reasonable interpretation of the claims, in light of the
specification.
Ans. 36. Appellant does not explain why the Examiner’s findings are
erroneous or otherwise fail to teach or suggest the argued determining a
context from a message’s content. Thus, based on a preponderance of the
evidence, we agree Kunz in combination with Hardy, Floss and Domenico
teaches or suggest the disputed limitations of claims 11 and 12 and sustain
the rejection of those claims.
CONCLUSION
For the reasons discussed above, Appellant’s contentions are
unpersuasive of reversible Examiner error. Accordingly, we affirm the
Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 13–20 103 Hardy, Floss,
Domenico
1–9, 13–20
10 103 Hardy, Floss,
Domenico, O’Neil
10
11, 12 103 Hardy, Floss,
Domenico, Kunz
11, 12
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2020).
AFFIRMED